Re: Opposition by Kindred Management Group Pty Ltd to registration of trade mark application number 1842623 (class 43) - Spaghetti Western CAFE' & Bar (word mark) in the name of Geoffrey Joseph Anderson

[2020] ATMO 103

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Kindred Management Group Pty Ltd to registration of trade mark application number 1842623 (class 43) – SPAGHETTI WESTERN CAFE’ & BAR (word mark) - in the name of Geoffrey Joseph Anderson

Delegate:	Kate Doherty
Representation:	Opponent:  Self represented Applicant: Self represented
Decision:	2020 ATMO 103 Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – grounds of opposition pursued ss 43 and 58; none established; trade mark will proceed to registration.

Background

1.    This is an opposition proceeding on the written record decided as delegate of the Registrar of Trademarks in relation to the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No:       1842623

Trade Mark:              SPAGHETTI WESTERN CAFE’ & BAR (‘Trade Mark’)

Filing date:                4 May 2017

Applicant:                  Geoffrey Joseph Anderson

Specification of Goods: (at time of filing): Class 1: CAFE' BAR

Specification of Goods: (by amendment on 9 August 2017): Class 43: cafe bar

2. The Trade Mark was advertised accepted on 21 September 2017. A Notice of Intention to Oppose was filed on 20 November 2017 by Kindred Management Group Pty Ltd (‘the Opponent’). The Statement of Grounds and Particulars (‘SGP’) on 20 December 2017 and nominates the grounds of opposition ss 43 and 58 of the Act. On 1 February 2018, the Applicant filed a Notice of Intention to Defend the Opposition.

3.    The parties filed evidence in support, evidence in answer and evidence in reply. Neither party requested a hearing.

4.    The parties were notified that the matter would be decided with the material properly filed during the proceedings including evidence and any written submissions.  Written submissions were not received from either party.

Evidence

5.    The evidence received from the parties is summarised as follows:

Declarant	Party	Date	Annexures	Decision Reference
C Bruce	Opponent	7 May 2018	1-8	Bruce Declaration
G Anderson	Applicant	15 August 2018	1-9	Anderson Declaration
C Bruce	Opponent	26 October 2018	-	Second Bruce Declaration

The three declarations annex evidence which includes: regulatory documents, screenshots of websites and copies of various online articles as well as social media records.

6.    The Opponent has filed the following trade mark application:

Trade Mark No:       1845901

Trade Mark:              SPAGHETTI WESTERN ALWAYS GOOD. NEVER BAD. NEVER UGLY (‘Opponent’s Mark’)

Filing date:                18 May 2017
Applicant:                  Kindred Management Group Pty Ltd
Specification of Goods: (at time of filing):  Class 43: Hospitality services (food and drink); Providing food and drink; Restaurant services; Bar services; Cafe services

Onus and Standard of Proof

7.    The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.[1] 

[1] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

8.    The Opponent bears the onus of proof in an opposition proceeding.[2]  The application will succeed if one or more of the nominated grounds are established.  The rights of the parties are determined at the date of filing the application, the relevant date is 4 May 2017.

[2] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

Amendment to Nice Classification

9.    The SGP raises an amendment of the Trade Mark from class 1 specification to class 43.  The Applicant sought to amend the class of goods in the application, theoretically this extends the protection.[3]  Amendments to remove goods are more commonly permitted but the application to substitute the class of goods with a service class here has a unique factual matrix.

[3] Letter to IP Australia, signed by G Anderson, dated 21 July 2017.

10.   The amendment was formally sought in writing on 4 August 2017, and was granted 9 August 2017, which is reasonably close in time to the application being filed on 4 May 2017 and before the Trade Mark was advertised accepted on 21 September 2017. 

11.   The Applicant executed a statutory declaration to state that they sought advice by telephone both contemporaneously and prospectively from IP Australia in relation to IT issues.  Specifically, the computer would not permit the online picklist functionality to work correctly.[4]  This is supported circumstantially by the Trade Mark application defaulting to Class 1.  Class 1 is for chemicals with certain applications and not related in any way to the Trade Mark application here.

[4] Anderson Declaration, [46]-[50].

12.   The Applicant also submits that the class of goods is described within the plain words of the Trade Mark itself.  Specifically, the relevant words are ‘Café and Bar’.   NICE Classifications are an administrative tool, and a reasonable person searching for a related mark should have clearly seen that the Trade Mark may be a potential conflict.  The Opponent stated that the delay has caused actual prejudice but provided no further particularisation.[5]  

[5] Bruce Declaration, [26].

13.   I find that the amendment for the Class of Goods from Class 1 to Class 43 which preserved the priority date was properly allowed.

Grounds of Opposition

Section 58 – Applicant not owner of trade mark

14. Section 58 of the Act provides:

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note: For applicant see section 6.4F[6]

[6] Section 6 Definitions: applicant in relation to an application, means the person in whose name the application is for the time being proceeding.

1. The term ‘owner’ is not defined I the Act. However, it is well established that the owner of a trade mark is the person who first uses it in good will in Australia, or first files the trade mark application in Australia, whichever is the earlier.

2. The Applicant’s evidence shows use of the Trade Mark as a registered business name, but not use as a trade mark in the course of trade before the relevant filing date. Therefore, to establish this ground of opposition the Opponent must show:

   ·A person other than the Applicant used the Trade Mark, or a substantially identical trade mark,[7] as a trade mark in the course of trade in Australia; and

   ·The use was in relation to the services claimed by the Applicant in class 43 or in relation to services considered to be the ‘same kind of thing’;[8] and

   ·The use was before 4 May 2017, being the filing date of the Trade Mark.

   [7] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.

   [8] Re Hicks’ Trade Mark (1897) 3 ALR 75.

   Use by the Opponent before the filing date of the Trade Mark

   17.   Use of the mark in relation to goods or services to show a connection between the services and the user can support ownership.5F[9]  For claims of proprietorship no less than substantially identical will suffice.6F[10] 

   [9] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184, [14].

   [10] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936 [62].

   18.   It is necessary to consider whether the Trade Mark and the Opponent’s Mark are substantially identical. The test for ‘substantially identical’ is well established and requires the comparison of the marks side by side. 7FThe trade marks are as follows: [11]  

   [11] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 [12].

SPAGHETTI WESTERN CAFE’ & BAR	SPAGHETTI WESTERN ALWAYS GOOD. NEVER BAD. NEVER UGLY
0BTrade Mark	1BOpponent’s Mark8F

19.   Both marks contain the term ‘Spaghetti Western’.  The Macquarie dictionary defines the term as:[12]

[12] Macquarie Dictionary Publishers, 2020.

spaghetti western
/spəgɛti ˈwɛstn/ (say spuhgetee 'westn)
noun a film made in Italy in the genre of a western, usually technically excellent but with a simple storyline.

The Oxford dictionary defines the term ‘Spaghetti Western’ as:[13]

noun 
informal a western film made cheaply in Europe by an Italian director.

Furthermore, the Macquarie dictionary defines the term ‘Western’ in relation to film, as:[14]

…–noun 5. (also upper case) a story or film about frontier life in the American West during the latter half of the 19th century.

[13] Oxford Dictionary of English (3 ed.), Edited by A Stevenson.

[14] Macquarie Dictionary Publishers, 2020.

I find that the term ‘Spaghetti Western’ is the dominant feature in the Trade Mark.  The additional elements are only the words ‘Café and Bar’ which are descriptive.  The Opponent’s Mark uses punctuation which imports a structure consisting of short sentences and is a distinctive point of difference between the relevant marks.  The Opponent’s Mark uses the descriptors ‘never’ and ‘always’, with repetition of the word ‘never’.  The Trade Mark has five words, while the Opponent’s Mark has a total of eight words.  While the marks may be deceptively similar, I do not find that the marks are substantially identical.9F[15]

[15] PB Foods v Malandra DairyfoodsLtd (1999) 47 IPR 47 (FC).

20.   The Opponent’s evidence shows the Opponent, or a related entity, using other trade markscontaining the words ‘Spaghetti Western’ on Facebook and Instagram before the filing date of the Trade Mark including posts from social media dated 20 April 2017. [16]  These posts show the words ‘Spaghetti Western’  with device elements. The social media records do not indicate any goods or services. I cannot be satisfied that this amounts to either use in the course of trade or use in relation to the same kind of thing as the class 43 services claimed by the Applicant.  

[16] Bruce Declaration [11]-[15], Annexures 7-8.

21. I therefore find that the s 58 ground of opposition has not been established.

Section 43 – Trade mark likely to deceive or cause confusion

22. Section 43 of the Act provides:

43 Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Connotation requires something inherent in the mark which implies a connection and leads to confusion.[17]  Use, reputation and similarity are not relevant here.  A mere allusion or suggestion is not sufficient.[18]  The relevant characteristic of the services must be that they imply a sponsorship or association which they do not have.[19] Whether there is a likelihood of deception or confusion is to be answered:[20]

…not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered.

It must be determined whether there is a “real tangible danger” of deception or confusion arising.[21] As stated by Kenny J in McCorquodale:[22]

In order for s 43 to apply, the court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations…

[17] Registrar of Trade Marks v Woolworths [1999] 93 FCR 365.

[18] Suntory Limited v Aktion Zahnfreundlich [1998] ATMO 44.

[19] Pfizer Products Inc v Karam [2006] FCA 1663 [53].

[20] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 [362].

[21] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82 [595].

[22] McCorquodale v Masterson [2004] FCA 1247 [26].

23. There is no evidence before me of an inherently deceptive or confusing element of the Trade Mark. The Opponent has particularised in the SGP that confusion between various registered or unregistered trade marks could occur. This is not a relevant consideration for the s 43 ground of opposition, the reputation of other marks is solely constrained to assessment pursuant to s 60.[23]

[23] Winton Shire Council v Lomas (2002) 119 FCR 416.

24. The SGP alleges issues relating to the filing and priority dates of the Trade Mark and Opponent’s Mark. These issues are canvassed above and are not relevant pursuant to s 43.[24]

[24] See paragraphs [9]-[13], [18] above.

25.   A trade mark may seek to connote the idea of a semi-informal motion-picture category concept such as Bollywood or Spaghetti Westerns.  Such abstract references will not create a barrier to trade mark registration.[25]  Evocation of a vaguely defined film genre will not prevent registration for services in class 43.  The claim has no specificity in terms of a particular film, production company, place, Actor or other entity.  In this matter the term ‘Spaghetti Western’ does not connote the nature of the services, a geographic origin, approbation, endorsement or licence.  I find there is no connotation which would cause “enough persons in the relevant public to be deceived or confused”. 

[25] See above at paragraph [17].

26.   Any use of the Trade Mark as a trade mark could not reasonably lead to confusion.[26] 

[26] Carlton & United Breweries v Royal Crown Co Inc (2001) 53 IPR 599 [606]; The Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 [305].

27. The s 43 ground of opposition has not been established.

Decision

28.   The Opponent has not established a ground of opposition.  Pursuant to s 55(1), Trade Mark number 1842623 will proceed to registration one month from the date of this decision.

29. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

Costs

30. Costs ordinarily follow the event in an opposition proceeding. However, costs are only recoverable as described in Schedule 8 of the Trade Marks Regulations 1995.[27]  The Applicant is self-represented and costs in proceedings before the Registrar generally do not include work which a party does on its own behalf where there has been no payment. Therefore I make no direction as to costs.

[27] Trade Marks Office Manual of Practice & Procedure, Part 55.1

Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
10 June 2020